Ex Parte Seethaler et alDownload PDFPatent Trial and Appeal BoardMar 29, 201712539348 (P.T.A.B. Mar. 29, 2017) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/539,348 08/11/2009 Kenneth S. Seethaler RPS920090028USNP(710.120) 9132 58127 7590 03/29/2017 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 EXAMINER WILLIAMS, ARUN C ART UNIT PAPER NUMBER 2859 MAIL DATE DELIVERY MODE 03/29/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENNETH S. SEETHALER, JEREMY R. CARLSON, LARRY G. ESTES, HIROMITSU YAMAGUCHI, SHIGEFUMI ODAOHHARA, TAKESHI MATSUMOTO ____________ Appeal 2014–006891 Application 12/539,348 Technology Center 2500 ____________ Before TERRY J. OWENS, PETER F. KRATZ, and BEVERLY A. FRANKLIN, Administrative Patent Judges. BEVERLY A. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, 9–12, and 18–25. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below: Appeal 2014–006891 Application 12/539,348 2 1. An apparatus comprising: one or more processors; a multi-modal battery pack having one or more battery cells therein; and a program storage device housed within said multi-modal battery pack, the program storage device tangibly embodying a program of instructions that when executed by the one or more processors enables the multi-modal battery pack to: automatically determine an appropriate charging mode; and switch the one or more battery cells therein between charging modes, the charging modes comprising: a lifespan mode wherein the one or more battery cells are fractionally charged; a runtime mode wherein the one or more battery cells are charged; and a quick charge mode wherein the one or more battery cells are charged in a compressed time period; said apparatus further comprising one or more battery powered components operatively connected to the multi-modal battery pack. THE REJECTIONS 1. Claims 1, 2, 9–12, and 18–24 are rejected under 35 U.S.C. § 103(a) over Odaohhara (US 6,910,143 B2; iss. Jun.21, 2005) in view of Mahowald (US 2009/0289603 Al; pub. Nov. 26, 2009), and further in view of Suzuki (US 5,874,823; iss. Feb. 23, 1999). 2. Claim 25 is rejected under 35 U.S.C. § 103(a) over Odaohhara in view of Mahowald, and further in view of Suzuki, and further in view of Field (US 2004/0155661 Al; pub. Aug. 12, 2004). Appeal 2014–006891 Application 12/539,348 3 ANALYSIS Appellants dispute that the combined references suggest switching the one or more battery cells therein between charging modes, the charging modes being a lifespan mode, a runtime mode, and a quick charge mode as required by claim 1, for reasons provided on pages 11–13 of the Appeal Brief and on pages 11–15 of the Reply Brief. Therein, Applicants argue that none of the references suggest using the three claimed charging modes in combination, or switching there-between. Also, Appellants argue that the rejection confuses the claimed modes with various teachings of the references, and does not adequately explain how the charging schemes in the references allegedly map to Applicants’ claims, how they might be combined, or why it would be obvious to do so. The Examiner finds that Odaohhara is silent regarding: “the program storage device tangibly embodying a program of instructions that when executed by one or more processors enables the multi-modal battery pack to; automatically determine an appropriate charging mode; and switch the one or more battery cells therein between charging modes, the charging modes comprising a lifespan mode wherein the one or more battery cells are fractionally charged, and a run time mode wherein the one or more battery cells are maximally charged.” Final Act. 3–4. The Examiner relies upon Mahowald for teaching using a program storage device embodying programmed instructions for automatically switching between two charging modes, and the Examiner refers to each mode as a lifespan (partial charge) mode and a run time (full charge) mode. Final Act. 4. The Examiner finds that Odaohhara, taken in combination with Mahowald, or Mahowald further lacks an explicit disclosure of “a charging Appeal 2014–006891 Application 12/539,348 4 mode corresponding to a quick charge mode wherein the one or more battery cells are charged in a compressed time period.” Final Act. 4–5; see Final Act. 6–7. The Examiner relies upon Suzuki for teaching a mode that the Examiner believes is a quick charge mode as claimed. Final Act. 5, 7. We agree with Appellants that the Examiner has not established that any of the references, or their combination, suggest switching among the three modes as claimed (App. Br. 10–13; Claims 1, 11, 20). Suzuki teaches the idea of using trickle charging following a quick charging of the battery pack. Suzuki, col. 11, l. 64– col. 12, l. 42. Suzuki states that “[q]uick charging (trickle charging executed when both batteries are in an over- discharged state) can be executed in the conventional manner, i.e., by using a relatively large current from a commercially available power source outside the electronic apparatus”. Suzuki, col. 7, l. 66–col. 8, l. 3. Appellants argue that the Examiner has not established that this is a quick charge mode relative to the modes taught in Mahowald. We agree. The Examiner has established that this is a quick charge mode within the context of the disclosure of Suzuki, but does not point to evidence showing how this mode relates to the modes as defined in Mahowald. Mahowald defines a “partially charge state” as a “partial charge mode” meaning that the battery is “charged up to a threshold”. Mahowald, p. 2, para. [0019]. Mahowald defines a “full charge state” as a “full charge mode” meaning that a “full charge” is provided to the battery pack. Mahowald, p. 2, para. [0020]. The Examiner does not explain how these modes relate to the quick charge mode as defined in Suzuki (discussed, supra). This undermines motivation to add the quick charge mode of Suzuki to the system of Odaohhara in view of Mahowald when it is not articulated how the modes would then relate to Appeal 2014–006891 Application 12/539,348 5 each other. This is the point raised by Appellants, and the point that the Examiner does not adequately address in the record. Furthermore, the Examiner’s motivation to combine is “for advantages such as providing the ability to control flow of current”. Final Act. 5. Appellants submit that this reasoning is insufficient because the ability to control flow of current is already provided in Odaohhara or Mahowald. Appeal Br. 13. Reply Br. 14–15. In other words, on this record, the Examiner’s proposed modification appears to be premised on an impermissible use of hindsight after review of Appellants’ disclosure rather than on a supported reason to so modify available to an ordinarily skilled artisan and consistent with the teachings thereof. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). In view of the above, we reverse Rejection 1. We also reverse Rejection 2 because the Examiner relies on Field for allegedly suggesting features of dependent claim 25, not for curing the aforementioned deficiencies of the combination of Odaohhara in view of Mahowald and Suzuki. Final Act. 9. DECISION Each rejection is reversed. REVERSED Copy with citationCopy as parenthetical citation